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High Court Of Delhi
A.C.FOOTWEAR CO - Appellant
Versus
DEIEM (INDIA) PVT.LTD. - Respondent
CO : 15 of 1996
Decided On : 09/27/2005
Designs Act - Cancellation of Registration - 1911 Act, 2000 Act - Section 48, Section 19, Section 51a
Fact of the Case:
The petitioner filed a petition under section 51a of the Designs Act, 1911 for cancellation of design no. 166627 of respondent No. 1, claiming that the design was previously registered in India and was not new or original. The respondents entered appearance and filed their written statement, but were subsequently proceeded ex parte. The subject matter of dispute was the design in respect of the sole of the shoe, registered with the Controller of Patents and Designs, Calcutta.
Finding of the Court:
The court found that the design of respondent No. 1 ought not to have been registered due to the prior registration of the design of M/s Phoenix Overseas Limited. The court directed the cancellation of the registration and design of respondent No. 1, and respondent No. 2 was directed to strike off the said design from the Register of Designs.
Issues: The issues framed were whether Registered Design No. 166627 is liable to be cancelled on the grounds stated in the petition and the relief sought.
Ratio Decidendi: The court applied Section 19 of the 2000 Act, which allows for cancellation of registration on grounds including previous registration in India and the design not being new or original. The court found that the prior registration of the design of M/s Phoenix Overseas Limited rendered the design of respondent No. 1 unoriginal and directed its cancellation.
Final Decision: The court directed the cancellation of the registration and design of respondent No. 1, and respondent No. 2 was directed to strike off the said design from the Register of Designs.
( 1 ) THE petitioner has filed this petition under section 51a of the Designs Act, 1911 (hereinafter referred to as the `1911 Act ) for cancellation of design no. 166627 of respondent No. 1.
( 2 ) THE respondents have entered appearance and have filed their written statement.
( 3 ) HOWEVER, the respondents were subsequently proceeded ex parte on 22. 11. 2004.
( 4 ) THE subject matter of dispute is the design in respect of the sole of the shoe which has been registered with the Controller of Patents and Designs, Calcutta. It is the submission of the petitioner that design ought not to have been registered in view of the dual plea : firstly that the design has been previously registered in india and secondly the design is not a new or an original design.
( 5 ) THE plea raised by the respondents is that the petitioner was pirating the design of respondent No. 1 which was original.
( 6 ) BEFORE proceeding on the merits of the controversy, it would be relevant to take note of the fact that the 1911 Act stands repealed by the Design act, 2000 (hereinafter referred to as the `2000 Act ). Section 48 of the 2000 Act deals with repeals and savings and sub-section (4) provides that nothing contained in the Act of 2000 would affect the proceedings pending in any Court at the commencement of the Act under the 1911 act and those proceedings be continued as if the 2000 Act had not been passed. The corresponding provision to section 51a of 1911 Act dealing with cancellation of registration is Section 19 of 2000 Act where the ambit and scope has been expanded and additional grounds have been added.
( 7 ) LEARNED counsel for the petitioner submits that a learned Single Judge of the Bombay High Court had the occasion to consider the effect of this repeal provision of 2000 Act in Faber Castell Aktiengesellschaft Vs. Pikpen (P) Ltd. 2003 (27) PTC 538. The relevant Section 48 is as under :
48. REPEAL and Savings.- (1)The Design Act, 1911 (2 of 1911) is hereby repealed. (2)Without prejudice to the provisions contained in the general Clauses Act, 1897 (10 of 1897) with respect to repeals, any notification, rule, order, requirement, registration, certificate, notice, decision, determination, direction, approval, authorisation, consent, application, request or thing made, issued, given or done under the Designs act, 1911 (2 of 1911), shall, in force at the commencement of this Act, continue to be in force and have effect as if made, issued, given or done under the corresponding provisions of this Act. (3)The provisions of this act shall apply to all applications for registration of designs pending at the commencement of this Act and to any proceedings consequent thereon and to any registration granted in pursuance thereof. (4)Notwithstanding any contained in this Act, any proceeding pending in any court at the commencement of this Act may be continued in that court as if this Act has not been passed. (5)Notwithstanding anything contained in sub-section (2), the date of expiration of the copyright in the designs registered before the commencement of this Act shall, subject to the provisions of this Act, be the date immediately after the period of five years for which it was registered or the date immediately after the period of five years for which the extension of the period of copyright for a second period from the expiration of the original period has been made.
( 8 ) IT was held in the aforesaid judgment that as regards the registration done under the Old Act, sub- section (2) of Section 48 of the 2000 Act lays down that the registration shall continue to be in force and have the effect as if done under the corresponding provisions of the new Act. Thus the intention of the Parliament was that all other things done under the Old Act of 1911 can be continued to be in force and have effect as made under the provisions of the new Act of 2000. The only exception made is sub-section (4) of Section 48 which provides that any proceedi
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